Paris Convention & PCT Filings

Patent holders can choose to file under the provisions of the Paris Convention, either as an alternative to or in combination with filing via the PCT process.

Application Requirements

Under certain conditions and on fulfilling certain requirements, an application for patent filed in the United States may be entitled to the benefit of the filing date of a prior application filed in a foreign country. The conditions are specified in 35 U.S.C. 119(a)–(d) and (f), 172, 365(a) and (b), and 386(a) and (b), and 37 CFR 1.55.

Implementation of Public Law 112-211, 126 Stat. 1527 (titles I and title II of the Patent Law Treaties Implementation Act (PLTIA)), necessitated changes to the procedural requirements relating to claims for priority to an earlier-filed foreign application and to the submission of a certified copy of the priority document. The conditions for claiming priority to an earlier-filed foreign application are summarized below:

• (A) The foreign application must be one filed in “a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States or in a WTO member country.” See MPEP § 213.01.
• (B) The foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common. See MPEP § 213.02.
• (C) The application, or its earliest parent United States application under 35 U.S.C. 120, must have been filed in a “recognized” country (see MPEP § 213.01) within 12 months from the date of the earliest foreign filing unless the right of priority has been restored (see MPEP § 213.03). However, the period of 12 months specified in this section is 6 months in the case of designs pursuant to 35 U.S.C. 172. See MPEP §§ 1504.10 and 2920.05(d).
• (D) The foreign application must be for the same invention as the application in the United States.
• (E) For an original application filed under 35 U.S.C. 111(a) (other than a design application), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable. See MPEP § 214.01.
• (F) For applications entering the national stage under 35 U.S.C. 371 from an international application, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT Articles and Regulations.
• (G) For a nonprovisional international design application, the priority claim, unless made in accordance with the Hague Agreement and the Hague Agreement Regulations, must be presented in an application data sheet during the pendency of the application. See 37 CFR 1.55(m). In addition, the right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application can only be claimed in a nonprovisional, international, or international design application filed on or after May 13, 2015. See 37 CFR 1.55(o).
• (H) In the case where the basis of the claim is an application for an inventor’s certificate, the requirements of 37 CFR 1.55(l) must also be met. See MPEP § 213.05.
• (I) A certified copy of the foreign application must be filed within the time period set forth in 37 CFR 1.55. See MPEP § 215.02et seq. for applications filed on or after March 16, 2013, and MPEP § 215.03 for applications filed before March 16, 2013. The claim for priority and the certified copy of the foreign application must, in any event, be filed within the pendency of the application and before the patent is granted. See MPEP § 213.04.
• (J) If a nonprovisional application (other than a nonprovisional international design application) filed on or after March 16, 2013, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 35 U.S.C. 100(i)) on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. See 37 CFR 1.55(k) and MPEP § 210, subsection III.

Applicant may be informed of possible priority rights under 35 U.S.C. 119(a)–(d) and (f) by using the wording of form paragraph 2.18.

See Right of Priority of Foreign Application

MAJOR CONCEPTS OF THE PCT

The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application, “an international application,” in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national or regional filing in as many Contracting States to the PCT as the applicant “designates,” i.e., names, as countries or regions in which patent protection is desired. The filing of an international application will automatically constitute the designation of all contracting countries to the PCT on that filing date. In the same manner, the PCT enables foreign applicants to file a PCT international application, designating the United States of America, in their home language in their home patent office and have the application acknowledged as a regular U.S. national filing. The PCT also provides for the establishment of an international search report and written opinion at 16 months from the priority date and publication of the international application after 18 months from the priority date. Upon payment of national fees and the furnishing of any required translation, usually 30 months after the filing of any priority application for the invention, or the international filing date if no priority is claimed, the application will be subjected to national procedures for granting of patents in each of the designated countries. For any countries remaining whose national laws are not compatible with the 30 month period set forth in PCT Article 22(1), the filing of a demand for an international preliminary examination electing such countries within 19 months from the priority date will result in an extension of the period for entering the national stage to 30 months from the priority date. An up-to-date list of such countries may be found on WIPO’s website (www.wipo.int/ pct/en/texts/reservations/res_incomp.html). See also subsection V. below. A brief description of the basic flow under the PCT is provided in MPEP § 1842.

The PCT offers an alternative route to filing patent applications directly in the patent offices of those countries which are Contracting States of the PCT. It does not preclude taking advantage of the priority rights and other advantages provided under the Paris Convention and the WTO administered Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Agreement). The PCT provides an additional and optional foreign filing route to patent applicants.

The filing, search and publication procedures are provided for in Chapter I of the PCT. Additional procedures for a preliminary examination of PCT international applications are provided for in optional PCT Chapter II.

In most instances, a national U.S. application is filed first. An international application for the same subject matter will then be filed subsequently within the priority year provided by the Paris Convention and the priority benefit of the U.S. national application filing date will be claimed.

II. RECEIVING OFFICE (RO)

The international application (IA) must be filed in the prescribed receiving Office (RO)(PCT Article 10). The United States Patent and Trademark Office will act as a receiving Office for United States residents and nationals (35 U.S.C. 361(a)). Under PCT Rule 19.1(a)(iii), the International Bureau of the World Intellectual Property Organization will also act as a Receiving Office for U.S. residents and nationals. The receiving Office functions as the filing and formalities review organization for international applications. International applications must contain upon filing the designation of at least one Contracting State in which patent protection is desired and must meet certain standards for completeness and formality (PCT Articles 11(1) and 14(1)).

Where a priority claim is made, the date of the earliest-filed application whose priority is claimed is used as the date for determining the timing of international processing, including the various transmittals, the payment of certain international and national fees, and publication of the application. Where no priority claim is made, the international filing date will be considered to be the “priority date” for timing purposes (PCT Article 2(xi)).

The international application is subject to the payment of certain fees within 1 month from the date of receipt. See PCT Rules 14.1(c), 15.3, and 16.1(f). The receiving Office will grant an international filing date to the application, collect fees, handle informalities by direct communication with the applicant, and monitor all corrections (35 U.S.C. 361(d)). By 13 months from the priority date, the receiving Office should prepare and transmit a copy of the international application, called the search copy (SC), to the International Searching Authority (ISA); and forward the original, called the record copy (RC), to the International Bureau (IB) (PCT Rules 22.1 and 23). A second copy of the international application, the home copy (HC), remains in the receiving Office (PCT Article 12(1)). Once the receiving Office has transmitted copies of the application, the International Searching Authority becomes the focus of international processing.

III. INTERNATIONAL SEARCHING AUTHORITY (ISA)

The basic functions of the International Searching Authority (ISA) are to conduct a prior art search of inventions claimed in international applications (it does this by searching in at least the minimum documentation defined by the Treaty (PCT Articles 15 and 16 and PCT Rule 34)) and to issue a written opinion (PCT Rule 43bis) which will normally be considered to be the first written opinion of the International Preliminary Examining Authority where international preliminary examination is demanded. See PCT Rule 66.1bis.

For most applications filed with the United States Receiving Office, the applicant may choose (in the Request form) the U.S. Patent and Trademark Office, the European Patent Office, the Korean Intellectual Property Office, the Australian Patent Office (IP Australia), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), the Japan Patent Office (JPO), or the Intellectual Property Office of Singapore (IPOS) to act as the International Searching Authority. However, IP Australia and JPO may not be competent to act as an International Searching Authority for certain applications filed by nationals or residents of the United States. See MPEP §§ 1840.01 – 1840.07. The International Searching Authority is also responsible for checking the content of the title and abstract (PCT Rules 37.2 and 38.2).

An international search report (ISR) and written opinion will normally be issued by the International Searching Authority within 3 months from the receipt of the search copy (usually about 16 months after the priority date) (PCT Rule 42). Copies of the international search report and prior art cited will be made available to the applicant by the ISA (PCT Rules 43 and 44.1). The international search report will contain a listing of documents found to be relevant and will identify the claims in the application to which they are pertinent. The written opinion indicates whether each claim appears to satisfy the PCT Article 33 criteria of “novelty,” “inventive step,” and “industrial applicability.” The written opinion may also indicate defects in the form or content of the international application under the PCT articles and regulations, as well as any observations the ISA wishes to make on the clarity of the claims, the description, and the drawings, or on the question of whether the claims are fully supported by the description.

Once the international search report and written opinion are established, the ISA transmits one copy of each to the applicant and the International Bureau, and international processing continues before the International Bureau. If a Demand for Chapter II examination is not timely filed, the International Bureau communicates a copy of the written opinion established by the ISA (retitled International Preliminary Report on Patentability (Chapter I of the PCT)) to each designated Office after the expiration of 30 months from the priority date.

IV. INTERNATIONAL BUREAU (IB)

The basic functions of the International Bureau (IB) are to maintain the master file of all international applications and to act as the publisher and central coordinating body under the Treaty. The World Intellectual Property Organization (WIPO) in Geneva, Switzerland performs the duties of the International Bureau.

If the applicant has not filed a certified copy of the priority document in the receiving Office with the international application, requested upon filing that the receiving Office prepare and transmit to the International Bureau a copy of the prior U.S. national application, the priority of which is claimed, or requested the International Bureau to obtain a copy of the earlier application from a digital library, the applicant must submit such a document directly to the International Bureau or the receiving Office not later than 16 months after the priority date (PCT Rule 17). The request (Form PCT/RO/101) contains a box which can be checked requesting the receiving Office to prepare and transmit a copy of a prior application. This is only possible, of course, if the receiving Office is a part of the same national Office where the priority application was filed. The request (Form PCT/RO/101) also contains a box which can be checked requesting the International Bureau to obtain a copy of the earlier application from a digital library. This is only possible if the application is registered in a digital library, made available to the International Bureau within the prescribed time limit, as set forth in PCT Rule 17.1(b-bis), and the access code is furnished to the International Bureau.

The applicant has normally 2 months from the date of transmittal of the international search report to amend the claims by filing an amendment and may file a brief statement explaining the amendment directly with the International Bureau (PCT Article 19 and PCT Rule 46). The International Bureau will then normally publish the international application along with the search report and any amended claims at the expiration of 18 months from the priority date (PCT Article 21). For applications filed before July 1, 2014, former PCT Rule 44ter provided that the written opinion of the ISA would not be made publicly available until the expiration of 30 months from the priority date. For applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by the applicant are made available to the public in their original language as of the publication date. The international publication includes a front page containing bibliographical data, the abstract, and a figure of the drawing (PCT Rule 48). The publication also contains the search report and any amendments to the claims submitted by the applicant. If the application is published in a language other than English, the search report and abstract are also published in English. The International Bureau publishes a PCT Gazette in the French and English languages which contains information similar to that on the front pages of published international applications, as well as various indexes and announcements (PCT Rule 86). The International Bureau also communicates copies of the publication of the international application to all designated Offices that have requested to receive the publication (PCT Article 20, PCT Rule 47, and PCT Rule 93bis.1).

V. DESIGNATED OFFICE (DO) and ELECTED OFFICE (EO)

The designated Office is the national Office (for example, the USPTO) acting for the state or region designated under Chapter I. Similarly, the elected Office is the national Office acting for the state or region elected under Chapter II.

PCT Article 22(1) was amended, effective April 1, 2002, to specify that a copy of the international application, a translation thereof (as prescribed), and the national fee are due to the designated Office not later than at the expiration of 30 months from the priority date. Accordingly, the time period for filing the copy of the international application, the translation, and the fee under PCT Article 22 is the same as the 30 month time period set forth in PCT Article 39. The USPTO has adopted the 30 month time limit set forth in PCT Article 22(1). Most Contracting States have changed their national laws for consistency with PCT Article 22(1) as amended. An up-to-date listing of Contracting States that have adopted Article 22(1) as amended is maintained at WIPO’s website at www.wipo.int/ pct/en/texts/time_limits.html. At the time of publication of this Chapter, only two countries have not adopted Article 22(1) as amended: Luxembourg (LU) and the United Republic of Tanzania (TZ). It is noted that Luxembourg is included in the regional designation “EPO” and that the United Republic of Tanzania is included in the regional designation “ARIPO.” For those two remaining Contracting States that have not adopted Article 22(1) as amended, if no “Demand” for international preliminary examination has been filed within 19 months of the priority date, the applicant may be required to complete the requirements for entering the national stage within 20 months from the priority date of the international application in the national offices of those states. When entering the national stage following Chapter I, the applicant has the right to amend the application within the time limit set forth in PCT Rule 52.1. After this time limit has expired (PCT Article 28 and PCT Rule 52), each designated Office will make its own determination as to the patentability of the application based upon its own specific national or regional laws (PCT Article 27(5)).

If the applicant desires to obtain the benefit of delaying the entry into the national stage until 30 months from the priority date in one or more countries where the 30 month time limit set forth in PCT Article 22(1) as amended does not apply, a Demand for international preliminary examination must be filed with an appropriate International Preliminary Examining Authority (IPEA) within 19 months of the priority date.

Those states in which the Chapter II procedure is desired must be “elected” in the Demand.

PCT Rule 54bis.1 requires the Demand to be made prior to the expiration of whichever of the following periods expires later:

• (A) three months from the date of transmittal to the applicant of the international search report or of the declaration referred to in PCT Article 17(2)(a), and of the written opinion under PCT Rule 43bis.1; or
• (B) 22 months from the priority date.

However, applicant may desire to file the Demand by 19 months from the priority date to extend the national stage entry deadline in Luxembourg and the United Republic of Tanzania.

The original Demand is forwarded to the International Bureau by the IPEA. The International Bureau then notifies the various elected Offices that the applicant has entered Chapter II and sends a copy of any amendments filed under PCT Article 19 and any statement explaining the amendments and the basis for the amendments to the IPEA. See PCT Rule 62. The International Bureau also sends the IPEA a copy of the written opinion established by the International Searching Authority (ISA) unless the ISA is also acting as the IPEA. See PCT Rule 62.1(i).

VI. INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY (IPEA)

The International Preliminary Examining Authority (IPEA) normally starts the examination process when it is in possession of:

• (A) the Demand;
• (B) the amount due;
• (C) a translation, if the applicant is required to furnish a translation under PCT Rule 55.2;
• (D) either the international search report or a notice of the declaration by the International Searching Authority (ISA) that no international search report will be established; and
• (E) the written opinion established under PCT Rule 43bis.1.

The IPEA shall start the international preliminary examination upon receipt of the above materials unless the applicant expressly requests to postpone the start of the international preliminary examination until the expiration of the later of three months from the transmittal of the international search report (or declaration that no international search report will be established) and written opinion; or the expiration of 22 months from the priority date, with the exception of the situations provided for in PCT Rule 69.1(b) – (e).

The written opinion of the ISA is usually considered the first written opinion of the IPEA unless the IPEA has notified the International Bureau that written opinions established by specified International Searching Authorities shall not be considered a written opinion for this purpose. See PCT Rule 66.1bis. Also, the IPEA may, at its discretion, issue further written opinions provided sufficient time is available. See PCT Rule 66.4.

The IPEA establishes the international preliminary examination report (entitled “international preliminary report on patentability”), which presents the examiner’s final position as to whether each claim is “novel,” involves “inventive step,” and is “industrially applicable” by 28 months from the priority date. A copy of the international preliminary examination report is sent to the applicant and to the International Bureau. The International Bureau then communicates a copy of the international preliminary examination report to each elected Office.

The applicant must complete the requirements for entering the national stage by the expiration of 30 months from the priority date to avoid any question of withdrawal of the application as to that elected Office; however, some elected Offices provide a longer period to complete the requirements.

A listing of all national and regional offices, and the corresponding time limits for entering the national stage after PCT Chapter I and PCT Chapter II, may be found on WIPO’s website at: www.wipo.int/pct/en/texts/time_limits.html.

See 1801 Basic Patent Cooperation Treaty (PCT) Principles